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Tuesday, 31 July 2007

A press release reports that the UK Intellectual Property Office has published a productivity benchmarking study on patent grant procedure. According to the release,

" ... The European Patent Office (EPO), the German Patent and Trade Mark Office (DPMA) and the UK Intellectual Property Office (UK-IPO) have published an independent study [which you can download here as a pdf file] which benchmarks productivity in the patent grant procedure at the three offices. The purpose is to identify best practice in the patent search and examination procedures with a view to enabling each office to adapt its own practice in the interests of streamlining and efficiency. The study clearly identifies disparities in productivity between the EPO and the two national offices, although some of the differences are largely due to varying procedures.

... Wolfram Förster, head of the Controlling Office at the EPO, ... co-ordinated the study on behalf of the three offices [the study was actually conducted by Ernst & Young, though the press release omits this]

...

The study considers all patent searching and examination work done by the examiners at the three offices between September 2005 and August 2006. By carefully comparing the legal background and scrutinising the different patent procedures, it arrives at detailed conclusions about each office's working methods, leaving aside non-examination work and quality-related aspects. ... [I]nterviews were conducted with patent examiners at each office to ascertain the validity of the approach and identify potential problems and best practice.

While the underlying substantive law was found to be almost identical at the three offices, the study shows that productivity is significantly higher at the DPMA and UK-IPO, but that some of the differences are attributable to special features of the EPO's grant procedure. In general, the EPO was found on average to take 50% longer than the UK and German offices to produce its formal search and examination reports (products) and for its written and oral exchanges with applicants (communications). In terms of productivity, the UK-IPO sets the benchmark, coming slightly ahead of the DPMA (+3% for products, +2% for communications) and enjoying a marked lead over the EPO (+ 49%/+51%).

However, a large portion of these productivity differences may be due to procedural and structural differences between the EPO and the two national offices. For one thing, the results of the study are influenced by the written opinions which the EPO provides with its search reports. These were not considered for the purposes of productivity measurement because they are not issued on the same scale by the other two offices. Other important factors are the involvement of three-man examining divisions in the EPO grant procedure, where the other two offices employ only one examiner, and the impact of linguistic difficulties at the EPO (where not all examiners work in their mother tongue). In addition, the study identified problems posed for the EPO by poor translations of patent applications not originally drafted in one of its official languages. The study suggests that, together with a number of other factors, these may account for up to 45% of the productivity difference.

The study closes with an elaborate set of recommendations for implementation both inside and outside the three offices. These include general principles for balanced performance measurement and concrete proposals for enhancing the search documentation with non-patent literature. But they also encompass process-oriented improvements such as better allocation of patent files, and the suggestion that other offices from the EPO's member states and beyond might also take part in a benchmarking exercise".

The IPKat wishes to congratulate the UK patent examiners, many of whom read this weblog every day without any apparent loss of efficiency or professional skill. Merpel adds, when this item was posted, no sign of this benchmarking project could yet be seen on the website of the European Patent Office. The German Patent Office had however posted it pretty quickly. Both Kats agree that the name Wolfram is really cool.

Of course if you want a UK AND a German patent then which procedure is more efficient? Even at a simple level we should realise that if you want English and German language prior art considered you have to combine their efforts - they both may look at their non-native language documents but which office requires them to understand all of the documents which must be considered as prior art? Perhaps we should also divide the EPO figures by 32 since they grant up to 32 patents simultaneously? Maybe a more realistic figure is 10, but that still makes them about 6 times more efficient or, rather, the UK and DE offices are 500% less efficient??

Beware of headline figures - they look good but, like here, they actually compare apples and tomatoes!

Anonymous writes: "Perhaps we should also divide the EPO figures by 32 since they grant up to 32 patents simultaneously? Maybe a more realistic figure is 10, but that still makes them about 6 times more efficient or, rather, the UK and DE offices are 500% less efficient?". Very funny - but is he/she suggesting that there is so much prior art in the minority languages (i.e. most languages other than English and German) that is actually relevant and worth searching?

The mere fact that the EP examination is accepted by lots of National Patent Offices at the grant stage doesn't make the process any more efficient - they are still doing much the same job as the UKPO but taking much longer.However it is true the UK search doesn't cover quite as much ground (for example I don't think it's usually as good on Japanese publications) but there has to be a practical compromise if searches are to be done in a reasonable timescale anyway. It would certainly be quite adequate if only there was the safety-net of an Opposition procedure as there is in the EPO.

"It would certainly be quite adequate if only there was the safety-net of an Opposition procedure as there is in the EPO".

Pardon? Did you not know that in the UK anyone can apply under section 72 to revoke a GB patent at any time after grant? This is far more than the mere 9 month window allowed for opposition under the EPC.

Bomber, do UK patent examiners read German language documents or only the on-line English language abstracts? I don't know and ask that for information (likewise German examiners and English language documents).

If it is not a requirement that the examiners read the other language then far from just being a few documents, then there is a lot of documents which are not considered.

Re. efficency, what comment would be made if you heard that EPO examiners spent less time examining a patent application which is to be valid in 32 countries than a British examiner did for a UK application? I suspect there would be howls of protest about negligence at the EPO and screams about lack of quality.

I would add to David's comment the reminder that such application for revocation may be filed directly at the UKIPO and the procedure is typically cheaper, faster and less confrontational than the corresponding EP procedure.

In addition, I think the analogy of a safety net is wrong. It paints the UKIPO and EPO (and GPO) as walking on a tightrope, when PO's should (and, in general, do, despite horror stories that we will all be able to tell) operate more carefully than that.

As people have said, the results of the study can be interpreted different ways. The study was only looking at time taken, and did not take account either of cost (though this is obviously partly related to time taken) or of quality.

EPO and UK examiners each in theory do the same job, eg seeing if there is any prior art falling within the claims, checking whether the application is in order for grant, objecting if it isn't, etc. So in theory (ie if you make a load of probably unrealistic assumptions) it ought to take a UK examiner and an EPO examiner the same length of time to deal with a case. The fact that the EPO examiner's patent will cover many more countries does not make it any harder to deal with, though it might justify putting more time into the result.

If you feel that the UK's search and examination is "something of a rush job", and want it not to be so, then please say so loudly, preferably to the Government rather than the Office. At the moment, the Government thinks that customers want their results quickly and cheaply and so that is what we (yes, I work there) are expected to deliver.

Someone asked above whether we read German documents. The normal way we search involves using classification terms and/or words in the (English-language) abstract to select which documents we view. On viewing the document, the full text is normally available. So, while we need some sort of hint in the abstract or the classification that a document might have what we are looking for, if we are checking the document out in depth we can read the full text, and if necessary cut and paste it into a translation program or order up the document and show it to a colleague with better German. All the figures are normally available too. Where German documents might lose out is if we do full text searching. Here, if we do it at all, we are more likely to just use an English-language full text cluster and search that rather than use a German language one. So if we are looking for a feature that isn't going to appear in the abstract or classification at all, we are more likely to find it if it is in an English-language document. These cases are rare, however.

As to the extent of the search documentation - we have access to the "minimum documentation" (we use the EPO's own system EPOQUE) and we also have access to a number of technical databases. We also have access to the internet, which is occasionally helpful, and we have investigated its use to a reasonable extent.

Where's the qualitative assessment ? What about unit costs ? Even more fundamental, just how relevant to the needs of users is the patent system any more ?hmmm my blog usagamezone.blogspot.com must try for free games

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